On 7 November 2019 the Lisbon Court of Appeal reversed the decision of the 1st chamber of the Intellectual Property Court (IPC), on a case concerning the famous Volkswagen Type 2, the van informally known as Transporter, the Bus (US) or Camper (UK) also known as the Hippie van (during the 60s).
Indie Campers, S.A. is a Portuguese internet company that offers campervans in various destinations. Indie Campers applied for the national trademark registration no. 586625, a word and device mark, , for goods/services in classes 12, 20, 24, 35, 39, 41 and 43.
Volkswagen AG opposed the application on the basis of risk of confusion with the EUTMs for figurative and 3D marks depicting the VW Type 2 vehicle for goods in classes 12, 14, 16, 18, 20, 21, 25, 28, 30, 35, 37 and risk of unfair competition.
On 07-02-2017 the IP Office dismissed the opposition and granted the registration. The opponent appealed to the Intellectual Property Court.
1st instance decision
The IP Court revoked the granting decision considering that the goods/services are aimed at the same target audience, would share the same channels of promotion and distribution, with some of them having a relationship of complementarity. The court considered that the applied mark imitates the prior marks invoked by the opponent which depict the well-known and popular 1950 VW van. The IP court added that the applied mark could take advantage of the prior marks’ notoriety in the market, which constitutes an act of unfair competition.
Court of Appeal
The court of appeal reversed the IP court decision and reinstated the grant of the Indie Campers registration. The court found that:
- The applied mark has a word element, which appears prominently in relation to the figurative element, and this implies a significant differentiation in relation to the prior marks which are merely figurative marks.
- The applied mark has a visible color play especially the contrast between the cyan blue color in which the word element is written in white and the bright orange background in which the figure is inserted, elements that give the mark a distinctive appearance.
- Due to their word and visual elements, the marks under comparison are globally different and no likelihood of confusion or unfair competition is possible.